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Italian online filing system: review and update

After some years of research, deliberation, checks and refinements, early last year (February, 2015) the Italian Patent and Trademark Office (IPTO) finally introduced a telematic procedure to file applications online through a digital platform. Initially, online applications had been limited to trademark, patent and design applications and related requests, subsequently however, in November 2015, the telematic procedure was also extended to vegetal varieties, filing of oppositions, appeals and related requests.

This online procedure does not completely replace, but functions in parallel, with the traditional paper application filing process which is maintained for occasional depositors or those who do not wish to obtain digital signatures. So now, a full year on, it is interesting to look at how the system is working.

Was it a Copernican Revolution? Not exactly. Instead, according to the stated intentions of the IPTO, the new platform represented an improvement on the previous online filing system, allowing direct filing to the IPTO, bypassing the previous system which had relied on local Chambers of Commerce in many major towns throughout Italy. One of the main purposes of the overhaul was to increase administrative efficiency through procedure simplification.

Better late than never, one can certainly say. And indeed it is easily recognized that the digital pages - to be completed by inserting the application data - are clear and user friendly, making the filing procedure substantially easier for users.

So how is it progressing? During the initial months, unfortunately, procedural malfunctions were encountered, partly perhaps due to the significant number of applications that were filed within the first days. Subsequently however, these procedural malfunctions were resolved, thanks in part to the excellent cooperation and suggestions received from the Italian Professional Association of Intellectual Property Consultants as well as from individual associate members and simply through system user ‘trial and error’ noticing and providing alerts regarding ‘hitches’ in the system to IPTO.

The new online procedure still has some incongruities which need to be straightened out in the modernization process and signal that old bureaucratic habits are often hard for especially State and Tax Entities to completely abandon. First of all, the new online procedure does not allow stamp duties (which always had to be affixed to the applications) to be paid via an online electronic means or through a dedicated account, with the consequence that they still have to be purchased at physical shops and have to be ‘virtually’ attached to the online application, by indicating the serial number of the stamps in order for the duty to be effectively paid.

Having said that, the IPTO is currently working on this matter in order to activate a functionality allowing the use of virtual stamp duties for any kind of application. It is hoped that this useful change will be introduced in the very near future. As yet, the online procedure is also not currently available International Trademarks or PCT applications, however it is hoped that a resolution will also be found shortly whereby the online system will be able to support any kind of application and requests which the Office handles.

This new online system now aligns Italy with those of many national and international Trademark and Patent Offices who introduced online filing some years ago. Sadly the introduction of this new system has not been supported by the long overdue and necessary structural improvements needed within the Italian IPTO, due to a radical shortage of financial and staffing resources as well as limited governmental funding making it difficult to provide a faster and more efficient service notwithstanding concerted efforts of IPTO’s officials and employees to make the best of the limited funds at their disposal.

To sum up, although the new Italian online system still needs to focus on improvement, it represents a major step in the right direction for the IPTO in relation to increased functionality.